Maxell, Ltd. v. CORETRONIC CORP.
5:24-cv-00088
E.D. Tex.May 16, 2025Background
- Plaintiff Maxell, Ltd., a Japanese corporation, accuses Coretronic Corp. and its subsidiary Optoma Corp., both Taiwanese corporations, of directly and indirectly infringing seven U.S. patents by placing alleged infringing products into the U.S. market.
- Maxell alleges personal jurisdiction in the Eastern District of Texas via multiple theories: stream of commerce, alter ego, agency, and Rule 4(k)(2) (federal long-arm statute).
- Defendants moved to dismiss on three grounds: lack of personal jurisdiction (12(b)(2)), failure to join a necessary party (Optoma USA, 12(b)(7)), and failure to state a claim (12(b)(6)).
- Defendants argue they have no offices, employees, or business presence in Texas or the United States, and contend only Optoma USA, a California entity, is involved in accused U.S. activities.
- The court is evaluating these issues at the pleading stage, where well-pleaded allegations by plaintiff are assumed true and factual disputes are resolved in plaintiff’s favor.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (12(b)(2)) | Defendants purposefully place products into U.S./Texas market through stream of commerce and related companies, making them subject to jurisdiction | Defendants lack contacts with Texas/U.S.; only Optoma USA acts in forum | Court finds prima facie case for jurisdiction under stream of commerce and, alternatively, Rule 4(k)(2) |
| Whether Optoma USA is a necessary and indispensable party (12(b)(7)) | Court can accord complete relief among existing parties; common in patent suits not to join all alleged infringers | Optoma USA is a primary participant and its absence impairs relief and creates risk of inconsistent obligations | Court finds Optoma USA is not a necessary party; joinder not required |
| Sufficiency of direct infringement allegations (12(b)(6)) | Complaint alleges defendants, via sales to affiliates/partners, directly infringe by making/selling/offering/importing accused products in the U.S. | Only Optoma USA is involved in U.S. activity; Defendants have no presence/role in U.S. for sale/import | Well-pleaded allegations accepted as true; complaint gives fair notice; motion to dismiss denied |
| Sufficiency of indirect infringement allegations (12(b)(6)) | Complaint pleads knowledge, intent, and detailed actions showing inducement/contributory infringement; points to advertising, manuals, business structure | Lacks specific facts of knowledge/intent; only Optoma USA creates U.S. materials | Allegations are sufficient at pleading stage; factual merits will be resolved later; motion to dismiss denied |
Key Cases Cited
- Int’l Shoe Co. v. Washington, 326 U.S. 310 (due process standard for personal jurisdiction)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (stream of commerce and foreseeability in personal jurisdiction)
- Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir. 1994) (stream of commerce jurisdiction in patent cases)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (fair play & substantial justice in jurisdiction)
- Global–Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (inducement requires knowledge and intent)
- Commil USA, L.L.C. v. Cisco Sys., Inc., 575 U.S. 632 (standard for liability for inducing infringement)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard for sufficiency)